Trademark Law Case Studies: Big Yale v. Tiny Yale

According to the United States Patent and Trademark Office (USPTO), “a trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.”

If you are considering starting a business and you have a name in mind that you would like to use, it is highly recommended that you have a licensed trademark attorney conduct a Comprehensive Trademark Search for you. The purpose of the comprehensive trademark search is to determine whether your name, logo or slogan is in fact available for you to use and to register as a trademark for your business. In order to protect yourself from lawsuits from other companies claiming trademark infringement, it is essential that you take this simple step before using a name for your product or business in any way.

Many business owners fail to take the time to determine whether the name they have chosen for their product or business is actually available for them to legally use. In the following article, we will outline a recent trademark infringement case involving two educational institutions. The purpose of this case study is to help illustrate what can happen to businesses and business owners who neglect to conduct a trademark search before deciding to use a name.

Who Was Involved:

This trademark infringement case involved Yale University, one of the country’s most famous Ivy League schools, and Yale Academy, an education academy that helps individuals prepare for college entrance exams. Yale University is located in New Haven, Connecticut. Thousands of students attend classes each day on the 835-acre campus. Yale Academy caters to fewer than 200 students at shopping malls in New Jersey, Pennsylvania and Delaware.

What Was the Issue:

According to the legal documents, Yale University filed a trademark infringement lawsuit in May claiming that the defendant, Yale Academy, was infringing upon its name. In addition to using “Yale” in its name, Yale Academy also had a logo that used the same blue-and-white color combination as Yale University.

What Did the Plaintiff Argue:

According to an article in the New York Times, Yale University regularly takes action when its name has been infringed upon, and pays specific attention when infringement suggests what they call “a programmatic relationship between Yale University and the particular business, as may happen in the field of education.” This is a common argument made in trademark infringement cases. According to the Cornell University Law School, “Likelihood of confusion” is the central focus of any trademark infringement claim. A section of an article about trademark infringement on their website reads, “A likelihood of confusion exists when consumers viewing the allegedly infringing mark would probably assume that the product or service it represents is associated with the source of a different product or service identified with a similar mark.”

The fact that Yale Academy founder Terry Yang claimed he never intended to cause any confusion with the name of his company (he claimed he came up with the name by combining his last name — Yang — and that of his wife — Lee) mattered little to Yale University and their legal team.

Because Yale Academy was also operating in the “education institution” space, it’s not surprising that Yale University decided to follow through with their infringement lawsuit.

What Was at Stake:

Yale University is the third-oldest institution of higher education in the United States. As such, it’s not a surprise that the school takes reputation management very seriously. In the lawsuit they filed, Yale University took time to note their rich history and reputation. They wrote, “Many distinguished leaders in government, academia, science and business are Yale alumni, including three of the past four United States presidents…Yale’s reputation as a prestigious and elite university resonates not only in the United States, but around the world.” Yale, like many other famous educational institutions across the country has become an easily recognizable brand in the eyes of the public. For any business or organization, defending a registered trademark is an essential part of preventing the dilution of their brand reputation.

In addition, if Yale University failed to regularly detect and act on potential cases of trademark infringement, they risk potentially diminishing the strength of their trademark, which could result in the abandonment or cancellation of their registration.

What Was the Ruling

The case was settled in July in favor of Yale University. According to the New York Times article, founder Terry Yang has since changed the name of his educational company from Yale Academy to Y2 Academy.

The Law Office of Xavier Morales can prepare and file a trademark application for your business name, brand name, logo or slogan. Registering a trademark with the United States Patent and Trademark Office (USPTO) gives the owner of the trademark registration exclusive nationwide rights to use the name, brand, or logo.

By: Xavier Morales, Esq.

Xavier Morales, Esq. is a licensed trademark attorney. Mr. Morales founded his trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Mr. Morales’ law practice emphasizes trademark registration, counseling and enforcement.

Read more about Mr Morales, and The Law Office of Xavier Morales here.